FEDERAL COURT OF AUSTRALIA

Apotex Pty Ltd v Les Laboratoires Servier (No 3) [2009] FCA 1069

COSTS – application to amend patent dismissed – amendments allowable under s 102 of the Patents Act 1990 (Cth) – amendments refused by exercise of discretion under s 105 of the Patents Act 1990 (Cth) – whether costs should be discounted in favour of party seeking amendment

Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019

Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [2000] FCA 407

Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd & Ors, 12 November 1997, Federal Court of Australia, Sundberg J, unreported

APOTEX PTY LTD (ACN 096 916 148) v LES LABORATOIRES SERVIER; LES LABORATOIRES SERVIER and SERVIER LABORATORIES (AUST) PTY LTD (ACN 004 838 500) v APOTEX PTY LTD (ACN 096 916 148), SYMBION PHARMACY SERVICES PTY LTD (ACN 000 875 034), CHEM MART PTY LIMITED (ACN 001 235 374), PHARMACOR LIMITED (ACN 121 020 835), GENEPHARM LIMITED (ARBN 003 854 626) and SIGMA PHARMACEUTICALS (AUSTRALIA) PTY LTD (ACN 004 118 594)

NSD 657 of 2008

BENNETT J

22 SEPTEMBER 2009

SYDNEY

REASONS FOR JUDGMENT

1                          By an application filed on 2 March 2007, the respondent, Les Laboratoires Servier (‘Servier’) sought to amend Australian Patent No 2001276418.  The patent application was filed on 6 July 2001.

2                          I found the proposed amendments allowable under s 102 of the Patents Act 1990 (‘the Act’) but, in the exercise of the discretion afforded by s 105 of the Act, declined to allow the amendments (Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019).  I indicated in my reasons that I considered it appropriate that Servier pay the applicant’s costs of the application, which was dismissed.  However, as the parties had not made submissions on costs, I indicated that that order would be stayed to give the parties an opportunity to make submissions if they wished to do so.

3                          Servier submits that although the ultimate result was in Apotex’s favour and Apotex is entitled to have costs of the hearing, it is appropriate to allow a discount in Servier’s favour to account for Servier’s success in relation to the allowability of the amendments under s 102.

4                          Servier points out that the issues as to whether or not the amendments were allowable under s 102 of the Act were complex and involved evidence from two experts.  In those circumstances, where half of the hearing time concerned those issues, Servier submits that Apotex’s entitlement should be discounted by 50%.

5                          There are a number of reasons why, in my view, it is appropriate that Servier pay Apotex’s costs, despite its success in establishing that the amendments are allowable under s 102:

·          A patentee seeking to amend a patent is seeking an indulgence of the Court.

·          The Court has an unfettered discretion in the award of costs.

·          Where a patentee seeks to amend its patent, it has frequently been the case that the patentee pays the opponent’s costs, whether the amendment application is successful or not.  However, in the exercise of its discretion the Court might refuse costs or award reduced costs to a respondent who has made unnecessary or trivial objections (Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd & Ors, 12 November 1997, Federal Court of Australia, Sundberg J, unreported).  Where discounts have been granted, it has been in circumstances such as an unsuccessful, sustained attack on non-disclosure and where some amendments were abandoned (Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [2000] FCA 407).

·          Apotex’s conduct in submitting that the amendments were not allowable under s 102 was not unreasonable and the objections were not trivial (cf Wimmera).

·          One of the discretionary considerations for the purpose of s 105 was the characterisation of the invention of the patent.  I decided that the proposed amended claims, rather than the claims in the unamended patent, encapsulated the invention.  It was for that reason that the proposed claims were allowable and that was one of the reasons why the discretion was not exercised in Servier’s favour.  The two issues were intertwined.

·          Importantly, Apotex was successful and the amendments were not allowed.

6                          It follows that, in this case, it is appropriate that costs follow the event.  There is no need to make a further order for costs, as the stay on the order previously made will have automatically expired.

Associate:

Dated:         22 September 2009